WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Oy Gustav Paulig Ab v. Sriba Title, Inc Case No. D2009-1683 1. The Parties
The Complainant is Oy Gustav Paulig Ab of Helsinki, Finland, represented by Attorneys-at-Law Juridia ltd., Finland.
The Respondent is Sriba Title, Inc of Greensboro, North Carolina, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2009. On December 10, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 14, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 8, 2010.
The Center appointed Dilek Ustun as the sole panelist in this matter on January 20, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the owner of the trademark PAULIG, which is protected by numerous trademark registrations in many countries.
The name “Gustav Paulig Ltd” is also the parallel trade name of the Complainant.
The trademark covers many goods in different international classes, mainly in classes 29 and 30. The most important product sold with the trademark is coffee.
The trademark PAULIG has been used since 1876 when Mr. Gustav Paulig opened the first business in Finland. The coffee roasting operations were started in year 1904.
The trademark PAULIG has been accepted as a well-known trademark by the Finnish Patent Office. The Finnish Patent Office has considered the trademark PAULIG to have reputation among all Finnish people in respect of coffee. 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to the trademark PAULIG of the Complainant. The disputed domain name reproduces the Complainant's trademark PAULIG in its entirety and simply appends the descriptive suffix “usa”. This causes a high likelihood of confusion among the consumers.
The geographic designation “usa” adds nothing distinctive to the domain name, and the emphasis remains on the name PAULIG to attract the attention of Internet users. Indeed, Internet users are likely to believe the domain name is used by the Complainant for its American customers. Thus, the addition of “usa” does not avoid the suggestion of a false sense of origin or sponsorship with the Complainant. The trademark PAULIG is a protected and well-known name associated with Complainant.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In support of this allegation, the Complainant states that the Respondent has never been known by this name, the Complainant adds that the Complainant has never licensed or otherwise permitted the Respondent use its trademarks or to register any domain name containing the above-mentioned trademark.
The domain name was registered and is being used in bad faith.
The Respondent must have been aware of the Complainant and the trademark PAULIG at the time the disputed domain name was registered. The representative of the Respondent has admitted to have been several times in Russian Federation where the PAULIG coffee is commonly known.
Since the Respondent has known how to contact the Complainant and obtained price information shortly after the disputed domain name was registered, it is impossible to believe that the Respondent would not have been aware of the PAULIG trademark at the time of registration of the disputed domain name.
In the e-mail communication of September 23, 2009, the Respondent admits that “Paulig may be but is not your trademark”. This proves that the Respondent has known that PAULIG is the trademark of the Complainant. The Respondent does not make any claims that the trademark PAULIG would belong to them.
The use of the trademark PAULIG in the website “www.” supports the bad faith of the Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the trademark PAULIG, which is protected by numerous trademark registrations in many countries including Community Trade Mark registration No. 24471 PAULIG (word), International trademark registration No. 51282 Paulig (stylized) designating European Community, Belarus, Switzerland, Moldova, Norway, Russian Federation and Ukraine as well as the Finnish trademark registration No. 201050 PAULIG (word).
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant's registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615.
In addition, the Panel also concurs with the finding of previous UDRP panels that the use of a famous mark in its entirety together with a geographic term in a domain name will tend to create a domain name that is confusingly similar to the famous mark. See, e.g., Playboy Enterprises International Inc. v. Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassM, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoN / Domain Name for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc, Inter-Continental Hotels Corporation. v. South East Asia Tours,WIPO Case No. D2004-0388.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies,WIPO Case No. D2006-0582. Finally, Respondent has brought no argument in support of his contention that the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain name. Nor has the Respondent shown that it has been commonly known by the disputed domain name. The Complainant showed that the Respondent has neither a license nor any other permission to use the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks right or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
The Panel finds that given the use made of the disputed domain name, when the Respondent registered the disputed domain name it knew that PAULIG was the trademark of the Complainant. It registered the disputed domain name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.
The Respondent had contacted the Complainant in the beginning of 2008 and inquired prices of PAULIG coffee. It is obvious that the Respondent must have been aware of the Complainant and the trademark PAULIG at the time the domain name was registered. The representative of the Respondent has admitted to have been several times in Russian Federation where the PAULIG coffee is commonly known.
As mentioned above, it is reasonable to infer that that when the Respondent registered the disputed domain name, he knew that the name was the trademark of the Complainant. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that this knowledge may be considered as both a precondition and in appropriate cases also an indication of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
Since the Respondent has known how to contact the Complainant and obtained price information shortly after the disputed domain name was registered, the Panel finds it difficult to believe that the Respondent would not have been aware of the PAULIG trademark at the time of registration of the disputed domain name.
The use of the trademark PAULIG in the website “www.” also supports a finding of bad faith on the part of the Respondent. The Respondent obviously tries to create the impression that the website would be property of the Complainant and an official USA branch of the Complainant.
Thus it is obvious to this Panel that by using the disputed domain name, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Furthermore the seemingly untruthful claims about being “Paulig USA” and “exclusive importer” in the website may disrupt the business of the Complainant, in the sense that others who may wish to also import the PAULIG coffee products in the USA could be dissuaded from doing so. The Internet users may be mislead to believe that other companies are not entitled to import PAULIG coffee products in the USA.
In view of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be cancelled as requested by the Complainant.
Dilek Ustun
Sole Panelist
Dated: January 26, 2010
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